Paul F. McQuade

Paul F. McQuade

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Paul F. McQuade is Co-Chair of the Global Patent Prosecution Practice and focuses his practice on intellectual property law and government contracts, counseling both commercial and federal sector clients on improving their competitive position through intellectual property procurement and enforcement. Paul conducts intellectual property audits and due diligence in acquisitions and prepares and negotiates licensing, research and development and collaborative agreements between private parties and with government agencies in contract procurement and other transactions. He has litigated patent infringement and trade secret cases in a number of jurisdictions and has lectured and appeared in articles concerning intellectual property enforcement, data rights and software licensing.

Early in his career, Paul served as a judicial clerk at the U.S. Court of Appeals for the Federal Circuit, and at the U.S. Court of Federal Claims, which courts, respectively, have national jurisdiction over patent appeals and significant government contracts matters. He also served as a trial attorney at the U.S. Department of Justice (Commercial Litigation Branch, Claims Court/Federal Circuit Section).

Concentrations

  • Intellectual property
  • Government contracts
  • Technology law and related research and licensing transactions
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Capabilities

Experience

  • Conducted intellectual property audits for major corporations, engaged in strategic planning with regard to intellectual property deployment to achieve market share goals.
  • Conducted intellectual property due diligence on client acquisitions and divestitures both in commercial and government contractor sectors.
  • Defended patent infringement declaratory relief action through dismissal, helped to achieve summary judgment of non-infringement.
  • Negotiated some of the largest government research and development contracts awarded by DARPA in 1997-1998. Drafted complex teaming agreements, joint development programs, licenses, prime contracts and subcontracts.
  • Represented clients in contracts and takings claims before the courts where he once clerked and where he previously served as government defense counsel.
  • Litigated cases for both the government contracts and patent sections of the Commercial Litigation Branch. At the U.S. Department of Justice, Paul defended agencies against a wide variety of contract claims and appeals including R&D, cost accounting disputes, defective specification claims, and disputes over ownership rights in intellectual property.

°Certain of the above representations were handled by Mr. McQuade prior to his joining Greenberg Traurig, LLP.

  • Trial Attorney, Claims Court/Federal Circuit Section of the U.S. Department of Justice, Civil Division, Commercial Litigation Branch

Recognition & Leadership

  • Recognized, "IAM Licensing 250: The World's Leading Patent and Technology Licensing Practitioners," Intellectual Asset Management (IAM) magazine, 2010
  • Rated, AV Preeminent® 5.0 out of 5

AV®, AV Preeminent®, Martindale-Hubbell DistinguishedSM and Martindale-Hubbell NotableSM are certification marks used under license in accordance with the Martindale-Hubbell® certification procedures, standards and policies.

  • Member, American Bar Association, Public Contracts Law Section Committee, Government Research & Development and Intellectual Property
  • Member, Federal Circuit Bar Association's Procurement Contracting Study – IP Subcommittee
  • Member, Licensing Executives Society
  • Board of Directors, The Student Conservation Association, Charlestown, NH 1998-2004

Credentials

Education
  • J.D., University of Tennessee College of Law, 1983
  • B.S., Bethany College, 1979
Clerkships
  • Hon. Jack R. Miller, U.S. Court of Appeals for the Federal Circuit
  • Hon. Lawrence S. Margolis, U.S. Claims Court (now the U.S. Court of Federal Claims)
Admissions
  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Federal Claims
  • U.S. District Court for the District of Columbia
  • U.S. Patent and Trademark Office
Languages
  • French